After being a lawyer in Russia for 13 years, I moved to Canada in 2007, and went straight back to law school. After four more years, I became a Canadian lawyer and a registered trademark agent, and started my own law firm.

In Canada, only trademark agents can represent clients before the Canadian Intellectual Property Office. Trademark agents are also authorized to file and prosecute U.S. trademarks for Canadian residents.

Interestingly, lawyers who are not licensed as trademark agents in Canada, may not file trademarks in Canada on behalf of their clients. In other words, trademark agents who are not lawyers may file trademarks in Canada, but lawyers who are not trademark agents may not.

As of June 30, I gave up my lawyer license and continue running Trademark Factory International Inc. with my trademark agent license.

I didn’t suddenly lose passion for the law of intellectual property. I still I care deeply about it, and I still love Protecting Your Ideas and Covering Your Assets®. In fact, every time I'd tell my story that I've been a lawyer for 20 years, people would say that I don't look like someone who's been a lawyer for 20 years. And my answer was always, “Well, it's because unlike most lawyers, I don't hate doing what I have been doing for the last 20 years.”

Why am I giving up my license then?

There are many arbitrary rules that regulate what lawyers can and cannot do. These archaic rules were making it unnecessarily difficult for Trademark Factory® to provide our clients with the level of service they deserve. Despite the pretense that these regulations are designed to protect the public in their dealings with legal professionals, they only benefit big-firm lawyers and the regulators themselves.

These regulations would have me do business the 19th century way, while, to the delight of our clients, I am intent to provide alternative, result-oriented legal solutions. As I've always said, “If you are looking for a traditional lawyer to charge you in 6-minute increments every time the lawyer, their paralegal or assistants sneeze on your file, there are plenty of such lawyers around. I just don't want to be one of them.”

The first tagline I used for Mincov Law Corporation was "Outside The Box Legal Solutions," and I've always been pushing the envelope to provide business owners with legal services they were looking for. Recently, I realized that I don't even need to be in the box to provide solutions that lie outside of it.

I know for a fact that my clients didn’t choose me because I had a laminated piece of paper from the Law Society that graciously allowed me to call myself a lawyer. They entrusted me with their business because they like and trust me, because they like the way I do business, and because they like the results we are consistently delivering.

My mission with Trademark Factory® is to forever change the way the world does trademarks. My goal is to allow businesses and entrepreneurs from around the globe to register their trademarks anywhere in the world with a free trademark search, a single all-inclusive flat fee, and a 100% money-back guarantee.

While I am an expert in trademark laws, because of the Law Society regulations, I cannot fulfill my mission while carrying a license of a practicing lawyer in Canada.

Who would have thought that the week before Christmas would be so fruitful on important decisions in the area of intellectual property.

First, the Supreme Court of Canada has delivered a landmark decision in Cinar Corporation v. Robinson. In it, the Supreme Court of Canada unanimously dealt with many crucial issues pertaining to how copyright cases will be resolved in the future:

– the scope of protection afforded by the Copyright Act;

– the meaning of the words “substantial part” that set out the threshold for copyright infringement;

– rules regarding disgorgement of profits;

– rules regarding non-pecuniary damages; and

– rules regarding punitive damages.

Despite Supreme Court’s unanimity, this decision in fact further blurs the line between unprotectable ideas and protectable expression of ideas by adding a significant degree of subjectivity in the analysis. The Court refused the approach whereby the court first determines the original elements in the plaintiff’s work, then filters out unprotectable elements from that list, and, finally, compares the remaining protectable original features with what was actually used by the defendant. Instead, the Supreme Court preferred the holistic approach where “The character of the works will be looked at, and the court will in all cases look, not at isolated passages, but at the two works as a whole to see whether the use by the defendant has unduly interfered with the plaintiff’s right.”

This case likely turned on the single issue that defendants had access to the plaintiff’s work and knew that plaintiff would object to their use of it. The court wanted to land a helping hand to an author who failed to carry out a project whereas a very similar project was later carried out by several parties some of whom were originally involved in the plaintiff’s project.

It is what some lawyers call “the degree of sneakiness” that decided the case. In other words, the entire copyright law analysis only happened after the judges internally decided that the plaintiff should be rewarded and the defendants should be punished.

While I typically always support those whose rights are infringed in copyright law suits, this may be the case when bad facts make bad law, because I’m not sure that I agree (from the description of the two works, and without having had a chance to compare the actual works) that what was used was more than unprotectable idea.

Time will tell what this case will mean in terms of development of Canadian copyright law.

I already wrote about the facts of the case with a brief analysis before, but briefly here they are again: a BC flooring company that’s been around for over a decade realized that its competitor, another flooring company from the same city trademarked the word “Woodpecker” as its own.

The dilemma – do we spend a ton of money on rebranding or do we spend a ton of money on lawyers to fight this through – was entirely avoidable. All the first company had to do was register its trademark first.

They decided to fight for their trademark. BC Supreme Court granted an injunction recognizing the first company’s prior right in the trademark. Now, the BC Court of Appeal has agreed.

Happy ending? Not really, unless you mean a happy ending for all lawyers involved in this case.

Now that the case has been through the BC Supreme Court level and the Court of Appeal level, the first company has probably spent close to 100 times the amount that it would have cost them to register their trademark when they were starting out.

If anything, it would have been a good insurance policy.

Remember, registering trademarks is within the reach of any business that’s more than just a hobby. It’s a long-term investment that is crucial for any business that spends time, money and energy on branding and marketing.

The information on this website is for general information purposes only. Nothing on this website should be taken as legal advice for any individual case or situation. This information is not intended to create, and its receipt or viewing does not constitute, a solicitor-client relationship.